Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Thursday, 30 April 2015

In a post earlier this week on the continuing unrest at the
EPO, Merpel mused on whether the EPO’s proposals to reform sick leave and long
term invalidity policies were really so very different to the policies applying
in other intergovernmental bodies and IP offices in Europe. Here's what she wrote:

She wonders:
can some kind reader compile a comparative table of sickness-related provisions
and benefits that apply for each of the organisations mentioned above, and any
others she may have overlooked, so that she can publish it here and readers of
this weblog can see for themselves whether the EPO staff have a genuine
grievance or are merely in training for the Marathon Moan event at the next
Olympics?

Well, this cri de coeur came up trumps. A very kind
reader, who shall remain anonymous but who deserves enormous thanks nonetheless,
has prepared a detailed comparison of the sick leave policies of the EPO as
they currently stand and as proposed to be reformed (explained here),
set against those of the following bodies:

CERN

European
Commission

NATO

OECD

UN

WIPO

World Bank

Austrian
Civil Service

German Civil
Service

The
document, which Merpel has hosted here, goes far beyond what Merpel had hoped for. The author
cites sources carefully, explains the conclusions reached, and provides
measured analysis of how the EPO’s regime compares to the other organisations
listed. If any kind reader with knowledge of OHIM’s sick leave policy can add
to this table and/or provide a copy of the sick leave provisions, Merpel would be very interested to know
how it compares. She assumes it mirrors the EC provisions, but perhaps not.

Table 1: Main Findings

Organisation

Number of days of
uncertified sick leave in annual cycle

Maximum duration of
uncertified sick leave (working days)

Latest day of sick leave on
which a medical certification has to be issued

CERN

n/a

3

4

EC

12

3

4

EPO current

12

3

4

EPO proposed

3

3

1
– 4

NATO

6

2

3

OECD

9

3

2

UN

7

2

3

WIPO

7

3

4

World Bank

n/a

5

6

Austria, civil service

n/a

3

4

Germany, civil service

n/a

3

4

Merpel’s
most concise explanation of the main table of findings, reproduced above, will
follow an imaginary employee – let’s call him Benny -- who has the flu and is
absent from work for a few days as a result.

The middle column tells us that in most
organisations surveyed, Benny can only be absent from the office without a
doctor’s certificate for 2 or 3 days. In NATO and the UN, for instance, Benny
needs to have a doctor’s certificate if the absence lasts beyond two consecutive
days. At the EPO and European Commission, Benny needs to visit
a doctor and obtain a certificate if the absence lasts beyond three consecutive
days. So far, so good, and the EPO is in line with most of the other
organisations.

Assume Benny has returned
to work after three days’ absence. Six months later, he gets food poisoning and
is incapacitated for 24 hours, requiring him to take a day off work. In every
organisation surveyed, including under the EPO’s current regime, Benny could report
in sick, tell his boss he expected to be in tomorrow, and this would be
excused. Under the EPO’s new regime however (see column 1), Benny would already have completely
exhausted his entitlement to uncertified sick leave for the full year, and
would thus be absolutely required to visit the doctor that day and obtain a certificate to
prove he was ill. He would have to produce that certificate to the EPO on the same
day. (Merpel doesn't know how this works in Germany, Austria and the Netherlands, and has only the sketchiest understanding of human healthcare, but she sometimes has difficulty in getting a same day appointment with her vet. Presumably humans never have such problems.)

Benny would have to juggle these obligations with the requirement that he be at home between the hours of 10am
– 12 midday and 2 pm – 4 pm in case the EPO decided to send a doctor to the
house to check he was not malingering. He could leave the house, if he managed to get in touch with the President of the EPO and Mr Battistelli was agreeable to his absence from home.

For readers
who want to read more and to verify that the data is reliable for comparison purposes, Merpel can only
suggest they pore over the details provided by her anonymous source in the linked document.

Merpel's own
instinctive reaction is that the current allowance of 12 days uncertified leave in both the EPO and European Commission appears very generous, but this does not justify the level of bad faith and suspicion evident in the reformed system. What employee could feel that there can be a relationship of trust
with an employer who insists on a doctor’s certificate being provided on the
very first day of an illness and who also (uniquely among the organisations
surveyed) imposes an obligation to wait at home for the company doctor to ferret
out fraudulent claims of illness during both morning and afternoon on each and
every day when one is ill.

Finally, while the survey mentions the sick leave policies of the German and Austrian civil services, Merpel wonders if there are any readers willing to share how sick leave operates in each of the national IP offices which are under the stewardship of the delegates to the Administrative Council. These delegates had no hesitation in imposing the new sick leave regime on EPO employees at the request of the EPO President. Merpel wonders:

Did the AC delegates approve the EPO's new regime because similar provisions already apply in their own national IP offices?

If not, should readers expect their AC delegates to push through similar reforms on their home turf?

If the national regimes are more liberal, and the AC delegates don't intend to push through similar reforms at home, is there something in the Weissbier that causes one's views to harden while in Munich and to soften on the plane or train home?

Merpel thinks she knows the answers -- but she would love to be wrong.

As ever, Merpel welcomes comments, but
begs to remind readers of the following:

Henceforth, in respect of all EPO-related
blogposts, no comment will be posted if it is merely
ascribed to "Anonymous".
Any reader wishing to conceal his or her identity must adopt a pseudonym (which should
not be obscene and should not be the name, or the mis-spelling of the name, of
a real person). The pseudonym need not be an actual login name, as long
as it is stated clearly at the beginning and/or end of the comment itself. This
way, it will be easier for people who post later comments to identify and
remember the earlier comment-poster and to recall the discussion string.
Where, as has already happened on occasion, a string carries over from
one blogpost to a later one on the same or a related subject, readers will be
encouraged to use the same pseudonym for the sake of continuity.

Merpel has just noticed that today the European Patent Office has published on its website an on-line consultation on the proposals for the reform of the administration and structure of the Boards of Appeal. As reported by the IPKAt (here, here and here) the proposals, put by the EPO President to the Administrative Council in March, were ostensibly to increase the independence of the Boards of Appeal, but also (regrettably in Merpel's view) alluded to issues of efficiency. Both AMBA (the Association of Members of the Boards of Appeal) and the Presidium of the Boards of Appeal raised concerns about some aspects of the proposals, as reported by the IPKat here.

The report of the March meeting of the Administrative Council is here.

According to the consultation form, input appears to be specifically solicited from Patent attorneys, In-house patent council, Attorneys-in-law/solicitors/barristers, Judges, and University/research institutions, and filling in one of these categories (or "other") is mandatory. It is also mandatory to name the responder - so anonymous submissions are not welcomed.

Wednesday, 29 April 2015

Logos wanted. Last week the IPKat called for readers' submissions of new logos for the Office for Harmonisation in the Internal Market when it is rebranded as the European Union Intellectual Property Office. The Kat has received some good entries, but not nearly enough! Come on, put your designer's clogsglovespyjamas hat on and send us your best efforts.

Forthcoming events. Do please check out the IPKat's Forthcoming Events page -- there's plenty to educate the student, to inform the expert, to advise the investor, to connect the networker and to amuse the dilettante. Some of the events are even free, or reduced-rate for readers of this weblog.

Talking of forthcoming events, the IPKat's friends in the Competition Law Association are holding one under the title "Intellectual Property Enterprise Court Practice". The speakers on the topic of this most welcome of courts are Judge Hacon himself, District Judge Melissa Clarke and Angela Fox (RGC Jenkins & Co, author of this book on the subject). The date: Monday 18 May, 2015, 6 pm. The venue: Courtroom 1, Competition Appeal Tribunal, Victoria House, Bloomsbury Place, London WC1A 2EB. Click here for details.

Which way round? "Multilateralism at Risk: traditional intellectual property treaties and the threat of trade and investment agreements" is the challenging title of a forthcoming seminar at the Dickson Poon School Law, King's College London from 5 to 7 pm on Tuesday 26 May, in conjunction with the British Institute for International and Comparative Law. Speakers are Sam Ricketson, Shira Perlmutter and Federico Ortino and you can register by clicking here[Merpel finds herself pondering whether one could ask the question the other way round: are trade and investment agreements threatened by a persistent longing for multilateralism? But that's another matter ...].

Around the weblogs. While Merpel has posted at length (here and here) on the tussle of Big Bus and Ticketogo as to whether Big Bus can get disclosure of the licences that Ticketogo has granted to third parties in patent infringement proceedings in which it is the defendant, PatLit carries a short, sharp summary by Ian Wood -- who acted for Big Bus and who tells this Kat that Ticketogo has already received leave to appeal. EU Law Radar carries a helpful review of Case C-160/15 GS Media[noted by the IPKat here and here], a reference to the Court of Justice of the European Union on what the author describes as porno hyperlinks and hyperleaks. IP Finance takes a look at the PatentVue weblog. Something to read? The Unitary EU Patent System, edited by Justine Pila and Christopher Wadlow, was published last month by Hart Publishing. It's neither a practitioners' manual nor a collation of academic abstractions, but rather a many-layered appraisal of this curious legislative package. According to the web-blurb:

The purpose of this book is to explore the key substantive, methodological, and institutional issues raised by the proposed unitary EU patent system contained in EU Regulations 1257/2012 and 1260/2012 and the Unified Patent Court Agreement 2013. The originality of this work lies in its uniquely broad approach, taking six different perspectives (historical, constitutional, international, competition, institutional and forward-looking) on the proposed EU patent system. This means that the book offers a multi-authored and all round appraisal of the proposed unitary system from experts in patent law, EU constitutional law, private international law and competition law, as well as leading figures from the worlds of legal practice, the bench and the European Patent Office. The unitary patent system raises issues of foundational importance in the fields of patent and intellectual property law, EU law and legal harmonisation, which it is the purpose of the book to engage with.

This blogger mentioned its publication on PatLit not so long ago, but he has now had a chance to see it in the flesh, as it were. Justine and Chris have assembled an impressive array of contributors from the UK and beyond, so he'd expect it to be good. Since the new European patent package is still capable of being described as "work in progress", it's unsurprising that this volume is described as the "First Edition": clearly we can expect a sequel. Further details are available from the publisher's web-page for it, here; there's no risk of a rupture because it's hand-luggage friendly.

Readers of this blog who are on Twitter and other social media can probably not possibly have failed to know that, ever faithful, World Intellectual Property Day turned up again as usual this year on 26 April. This being a Sunday, some events were held in the preceding days. Equally faithful, IPANheld an event on Thursday 23 April which however was transferred, because of the upcoming General Election, from its usual venue at the Houses of Parliament to the BPI at County Hall.This moggy was delighted to run into not one, but two IP Ministers -- the current incumbent (at least until the General Election...) Baroness Neville-Rolfe, and her illustrious predecessorLord Younger. John Alty, the CEO of the Intellectual Property Office (also known by the statutory title of the Comptroller-General of Patents, Designs and Trade Marks), was also in attendance, together with many other luminaries of the IP firmament.For the report of the event itself, this Kat can do no better than call upon IPAN's own summary, which he gratefully reproduces here:

“IP - a 2020 Vision” - World IP Organization DIRECTOR
GENERAL SETS TONE FOR IPAN’S LONDON CELEBRATION OF WORLD IP DAY - 23 APRIL 2015

In
an introductory message to the 100 or so guests attending the IP Awareness
Network’s (IPAN) annual London celebration of World IP Day, the Director
General of the Geneva-based World Intellectual Property Organization (WIPO), Mr Francis Gurry said:

“Intellectual
capital is the basis of wealth creation today. This has elevated the importance
of intellectual property as intellectual property captures the competitive
advantage conferred by innovation and investment in intangible capital”.

Mr
Gurry led a distinguished speaker panel which included Mike Weatherley, the
former MP and IP adviser to the Prime Minister and the prominent designer
Sebastian Conran, in discussing the theme of the IPAN celebration: “IP a 2020 Vision”. Mr Gurry focused on the state of play of IP at an international level, ranging from the
complexities and challenges of policy-making in the internet era to the
continued growth in patent and related IP filings even in today’s difficult
economic conditions. He said,

“We
are living through a period in which innovation has become central to the
economy and experiencing a profound revolution in the production, distribution
and consumption of creative and cultural works. Intellectual property is key to
responding to the magnitude of the challenges that are arising from the
centrality of innovation and the digital revolution.”

Giorgio Sincovich, a senior IP Crime expert with Europol, speaking about the
challenges of dealing with IP crime and enforcement, said:

“Close cooperation between government and law
enforcement agencies and the private sector is key to winning the fight against
IP crime especially in day-to-day consumer goods. The profits generated from this
type of crime are huge, rivalling those from better known forms of organised
crime. Focusing on the financing of IP crime is essential to disrupt the
criminal groups involved and so protect the health and safety of EU citizens.”

“Our vision for the future is to engage
IP committed organisations and individuals in building on IPAN's 21 years of
raising awareness of IP's value and importance within education, finance,
business and parliamentary circles.”

During the Event, IPAN launched its newly revised Issue Briefs for parliamentarians and others seeking basic information about IP topics. Also the Chartered Institute of Patent Attorneys (CIPA - an IPAN member and Event sponsor), publicised its newly developed Manifesto for the IP System and supporting video aimed at influencing the new Government to ensure that all forms of IP actively promote entrepreneurship and enterprise.

It was a great pleasure to hear again from the erudite Dr Gurry, who also graced with his attendance the 10 year celebration eventfor this very blog. An interesting idea arose in discussions with Dr Gurry over tea at CIPA before the event, which he mentioned in response to a question asked at the IPAN event, and which - you heard it here first - the IPKat will now reveal.

Registration of assignments, licences and securities on registered rights internationally can be a very expensive process. The formalities required differ considerably from country to country, and many jurisdictions still require translations, notarisation, legalisation, and other costly certifications. How about an international treaty, administered by WIPO of course, to provide a centralised, and much cheaper, mechanism of recordal, with the minimum of extraneous formalities? This would benefit the rights holders and licensees by reducing the cost of recordal, and would benefit third parties as then registers would be much more likely to be accurate and up-to-date. The complexity of the current systems means that often registration never takes place at all, with the result that the real owners of rights, and other parties with an interest in them, can often be difficult or impossible to determine. As it happens, in a case reported by the IPKat this very morning, apparently only 38 of a total of 60 licences were actually recorded on the Register.What do our readers think?

Would Big Bus and Ticketogo be likely parties, should proceedings be commenced?

Yes.

Would the disclosure sought by Big Bus also be subject to Ticketogo's standard disclosure obligations should proceedings be commenced?

Yes, but only in relation to the subset of documents sought by Big Bus. Ticketogo's solicitor had argued three points. First, if Ticketogo brought an infringement claim, there would be a split trial. If Ticketogo was unsuccessful on liability then there would be no inquiry as to damages. Accordingly, there would be no disclosure of documents relating to quantum. To this the judge responded that although it is usual, it is not set in stone that the trial would be split. Even if it was, under Baldock the obligations for discovery extended to documents relating to quantum notwithstanding the presence of a split trial. Arnold J considered the cases of Hazeltine and Kapur to be consistent with this and the position under the Civil Procedure Rules to be much the same as under the old rules (which were at issue in Baldock). Arnold J continued:

"... CPR rule 31.5(8)(f) empowers the court to order disclosure in stages, which includes ordering disclosure only in relation to liability in the first instance, but that depends on the exercise of the court’s discretion. The fact that the court will normally exercise its discretion in favour of staged disclosure does not undermine the proposition that, in principle, the duty of standard disclosure extends to documents relating to issues as to quantum. Unilin v Berry is consistent with this."

Secondly, Ticketogo's solicitor argued that if Ticketogo was successful, it might elect for an account of profits in which the licence agreements would not be relevant. The judge considered that it was more likely that TIcketogo would elect for an inquiry as to damages than an account of profits. Indeed, when the judge asked Ticketogo's solicitor whether Ticketogo would be prepared to undertake only to seek an account of profits in an claim against Big Bus, "unsurprisingly the answer was no".

Thirdly, even if Ticketogo elected for an inquiry as to damages, it was not the case that all licence agreements would be relevant. Here, the judge agreed that only a subset of documents would be disclosable as not all licences under the patent would be "sufficiently comparable that they would fall within Ticketogo's duty of standard dislcosure on an inquiry as to damages". At this juncture, the judge considered that the duty of standard disclosure would extend to all licences in the transport sector.

Was the disclosure sought desirable in order to dispose of or help settle the proceedings or in the interest of costs?

Yes, large sums of money may have been spent by parties at the liability stage. Sometimes, and worryingly, these sums can exceed that than the value of the claim. Mr Justice Arnold cited two of his cases where this had occurred: Force India Formula One Team Ltd v 1 Malaysia Racing Team Sdn Bhd [2012] [noted by the IPKat here] and Primary Group (UK) Ltd v Royal Bank of Scotland plc [2014]. It was therefore desirable for the parties to be able to make realistic and informed assessments of the value of the claim as soon as possible. Where key information is held by one party, it is desirable for that party to disclose the information. Such information can promote settlement without the recourse to proceedings.

Further, the value of the claim helps determine how the case should be managed should proceedings ultimately be commenced (i.e. proportionately to the value of the claim). To this end, Hazeltine and Baldock should be distinguished in that they were decided before the Woolf and Jackson reforms, the latter of which emphasizes proportionality of case management. Further, in all of the four cases cited, limited disclosure had been offered, suggested or ordered by one of the parties or the court. The courts therefore recognized the desirability of

"... some disclosure as to quantum being given at an early stage. What the courts have resisted is the expense of full disclosure of documents relating to quantum being given prior to liability being established in cases where a split trial has been or is likely to be ordered, which would defeat part of the object of a split trial."

Should, in the Court's discretion, disclosure be ordered?

Yes. Significantly, Ticketogo's solicitor made submissions relating to its "freedom of negotiation", i.e.,that it was desirable for Ticketogo to negotiate licences individually with licensees without each licensee knowing what the other licensees have agreed to pay. This freedom of negotiation permits each party to maximize the licence income it obtains from each licence. Mr Justice Arnold stated that, in his view

"... this is the real point of principle raised by this application: is it an answer to an application for pre-action disclosure that is otherwise well founded that it would deprive a patentee (or other right owner) of the ability to conduct its business in that manner? In my judgment, it is not. On the contrary, I consider that, here as in other contexts, transparency is a virtue. Availability of price information is one of the key requirements for the proper functioning of any market, and I see no reason why the market for patent licences should be an exception to that rule. Why should Big Bus be obliged, if it does not wish to litigate, to accept whatever royalty rate Ticketogo now sees fit to offer it, if a court would award less by of damages? Accordingly, I consider that it is appropriate to exercise my discretion in favour of disclosure."

Related to this point is that Big Bus cannot form its own assessment on the value of the claim without this disclosure. The fact that other licnesee entered into licences with Ticketogo without the benefit of disclosure, does not demonstrate Big Bus' ability to formulate the value of the claim.:

"With the exception of the first licensee to take a licence, they could have made similar applications to that now made by Big Bus. Why should Big Bus have to fight and lose on infringement and validity in order to find out what it would have to pay by way of damages?"

Practical point

The closed, private world of patent, licence negotiation may have been cranked open following Big Bus's success. There are sure to be further applications hot on its heels. Meowing out loud, Merpel wonders if someone already subject to a licence agreement could bring about the end of the contract and then launch an application for pre-action disclosure on the basis that the licensor would then sue them for infringement (subject to the terms of the contract). The purpose of such an application would be to see whether they had entered into a good or bad deal (subject to the dispute resolution clauses in the contract).

The model of patent licence entities sending letters en masse to alleged infringers in the hope of securing licence agreements may lose some of its lustre as a result of this case. The reward in successfully cajoling a company into a into licence agreement in order to avoid the threat of high litigation costs may no longer be worth it if the price the troll under the bridge has to pay is disclosure ...

Over the past few weeks this tired, overworked moggy has been finding solace in the litigation-laced narratives of Patents Court decisions from England and Wales. Could anything be more restorative of a flagging spirit than pages (and pages) of Arnoldian dicta? Putting this theory to the test, this moggy has just digested an "unprecedented" pre-action disclosure application decision of Mr Justice Arnold in Big Bus v Ticketogo [2015] EWHC 1094 (Pat).

Headline point

Big Bus, an operator of open top bus sightseeing tours, made a successful application for pre-action disclosure against Ticketogo under the Civil Procedure Rules, CPR 31.16, in order to obtain patent licences previously granted by Ticketogo to third parties. Such disclosure would enable Big Bus to quantify the value of Ticketogo's claim for patent infringement, a claim that Ticketogo had made by implication through a series of pre-action letters sent by its solicitors. The success of Big Bus's application could change the hitherto closed environment in which patent licences are negotiated and may launch similar applications by alleged infringers who are faced with similar correspondence from patent licensing entities or otherwise.

Background

Ticketogo is the proprietor of UK patent No 2 391 101 entitled "Ticketing system" that claims a method of issuing a ticket containing a barcode in an image file format over the internet. The Register of Patents records that 38 companies have entered into licences under this patent. At the hearing, Ticketogo's solicitor stated that the true number of licensees was actually over 60 companies. On the evidence before the judge, Ticketogo does not conduct any business other than patent licensing.

...but don't get taken for a ride!

In October 2012, Ticketogo's solicitors wrote to Big Bus, alerting them to the existence of the patent and informing them that they were prepared to enter into a licence with Big Bus for it, as they had recently done with another "major coach travel operator". Big Bus replied that it did not require a licence. Oh, yes you do, said Ticketogo. Big Bus retorted that its system did not fall within the patent's claims. Ticketogo responded that it certainly did and warned Big Bus not to challenge the patent's validity because to do so "is always a complicated and expensive exercise, by the time that technical experts and Counsel have got involved". Ticketogo also explained that National Express Group was a licensee of Ticketogo's, presumably to encourage Big Bus to follow suit.

By the end of January 2013 the record fell silent, perhaps because of ongoing without-prejudice negotiations. The next letter came from Ticketogo's Chief Legal Officer in April 2013, informing a representative of Big Bus that further new licences had been entered into with third parties and inviting dialogue on the matter. Fast-forward to February 2015: Ticketogo's solicitors wrote to Big Bus' solicitors, refreshing the "you need a licence" correspondence and requesting that Big Bus explain fully their position on validity and infringement if they were not willing to enter into a licence. Big Bus responded by requesting pre-action disclosure of four categories of documents, including the copies of the licences. Ticketogo declined to provide disclosure with the line:

"If the Big Bus Company’s strategy is to bury its head in the sand in the hope that our client’s claim will disappear, it is mistaken. The Big Bus Company should be in no doubt that our client’s claim will not disappear, and the size of the claim grows with each day of unlicensed activity."

The application

Big Bus launched its application for disclosure of all licences granted by Ticketogo under the patent, and in particular those named by Ticketogo in correspondence. The proposed order also contained a confidentiality club to be agreed or determined by the court in the event that the documents contained confidential information. The evidence in support of the application highlighted that Ticketogo had repeatedly relied on the fact that third parties had taken out licences in order to persuade Big Bus to do the same. It also stated that it was desirable to reach a commercial agreement but, in order to establish the value of Ticketogo's claim, they would need disclosure of the existing licences. Such information would inform settlement. Ticketogo did not serve any evidence in opposition to the application.

The law

Before an action is commenced, the court has the power to order a would-be party to disclose documents. The philosophy behind this power is to assist litigants in disposing of the dispute before proceedings are commenced. In particular, pre-action disclosure is desirable where it disposes fairly of the anticipated proceedings, assists in resolving the dispute without the need for proceedings or saves costs (see Civil Procedure Rule 3.16(3)(d)). Pre-action disclosure is generally "desirable" where the information is only known to one of the parties (see XL London Market v Zenith [2004], Birse v HLC [2006] and Briggs v The Governors of Southfield School for Girls[2005]). The applicant and respondent also have to be likely parties in any subsequent proceedings and the documents ordered for disclosure would have, more probable than not, had to been disclosed under the respondent's standard disclosure obligations (see Hutchinson 3G UK v O2 [2008]). These requirements have to be satisfied first. The second stage is a matter of the judge's discretion: should an order be made?

Don't mess with Big Buses ...

Ticketogo's solicitor relied on two older authorities in relation to discovery in IP cases -- Hazeltine v BBC [1979] and Baldock v Addison [1995]. In conducting legal research of his own, Mr Justice Arnold relied on two further cases that had not been cited in argument. All of these cases involved an argument esoteric to IP cases (and other cases) under English procedure. For IP cases, the normal course is that liability is decided first, with the question of damages following in a separate trial. This is sometimes referred to as a "split trial" or, to the horror of some, "bifurcation". There is a case management justification behind a split trial -- there is no need to spend the time and money in disclosing documents and preparing your case on quantum of damages if the patent is not valid or infringed. The four cases cited here focused on the argument that disclosure which was sought before liability was determined, of matter that related to the question of damages, should not be ordered by the court.

In Hazeltine, the plaintiff sued the BBC for infringement of two patents over a 10 week period and sought an inquiry as to damages. The BBC denied infringement and maintained that the patents were invalid. The defendant was reluctant to incur the costs of successfully defending the action especially if they totalled more than the damages. Because the plaintiff exploited its patents through licensing activities and not manufacture, the defendant considered it would be able to disclose a reasonably royalty rate. Accordingly, the BBC asked for discovery of all the licence agreements granted by the plaintiff under the patents. The plaintiff resisted discovery on the basis that those agreements were not relevant because liability had not been determined and, in any event, discovery should be refused in the exercise of the court's discretion. Although Mr Justice Whitford did not reach a final conclusion on the "split trial" point, he implied that the court should be able to order disclosure on matters of quantum if the spending of enormous sums of money could be avoided. Nevertheless, in his discretion the discovery sought by the BBC was burdensome and he refused the discovery application.

Discovery!

In Baldock, the plaintiff claimed an inquiry as to damages or an account of profit for the alleged infringement by the defendants of his musical work. There was to be a split trial, with liability being determined first and quantum being determined only if the plaintiff was successful. The plaintiff requested discovery on issues relating to quantum which, he said, were necessary to make an informed assessment of the value of his claims. This information would assist him in assessing the merits of pursuing his action, allowing the legal aid authorities to consider whether to support his claim and providing an informed response to any settlement. The Master ordered discovery on quantum, but the defendants appealed, maintaining that the court had no jurisdiction to order disclosure on quantum until liability was determined and that, accordingly, the court should exercise its discretion to limit discovery in this respect. Mr Justice Lightman rejected the first ground on the basis that the mere existence of a split trial did not remove the relevancy of quantum issues in the action as a whole. However, he allowed the appeal on the second ground, holding that the court "has discretion in the case of a split trial whether or not to limit discovery to the issue of liability" unless it was necessary.

In Kapur, the claimant claimed losses as a result of a fire against its insurance broker following the broker's repudiation of the insurance policy for non-disclosure. The judge ordered a split trial. The broker appealed requesting a full trial and, in the alternative, discovery in relation to quantum in order to enable the broker to make an informed payment into court or settlement offer. The Court of Appeal dismissed the appeal on the ground that standard disclosure on quantum ordered before liability is assessed would defeat the economic benefit of a split trial. However, where a party requests specific information or documents, the court may order disclosure -- but in Kapur no such request was made.

In Unilin, the claimant sued the defendants for patent infringement. At the case management conference, the claimant sought disclosure of information as to the volume of sales of an allegedly infringement product made by or on behalf of the defendants. This was requested in order to assess the value of the claim. Relying on Baldock and Kapur, Judge Fysh QC ordered he defendants to provide a "broad outline" of the amount of the product sold. Such an outline would be in accordance would be in the spirit of the civil procedure rules and not burdensome.

Yesterday Birss J made yet
another order pursuant to s97A of
the Copyright, Designs and Patents Act 1988 (CDPA)[this is the provision by which the UK implemented Article 8(3) of the InfoSoc
Directive into its own national law; for earlier cases, seehere]to block access to
websites hosting unauthorised content whose copyright is owned by members of
the Motion Picture Association of America (MPAA). The case was 20th Century Fox and Others v Sky UK and Others.

The application concerned 9 different
target websites and was initially made on paper. After recalling the
conditions under which an order may be granted on paper (which in any case is
something for the court to decide), Birss J refused to deal on paper with this
particular application. This was on consideration that, because of their
characteristics, five websites raised "new and different issues"[para 15]from those considered in earlier
applications.

All such websites employed
the same Popcorn Time system which - in Birss J's opinion - would not allow per se a finding of infringement -
whether primary or secondary - of the right of communication to the public
within s20(2)(b)
CDPA.

Popcorn Time

As explained by the judge,
Popcorn Time refers to an open source application which must be downloaded
by the user onto their computer from a Popcorn Time application source
website (PTAS website) to browse, search and locate film and TV content using
the BitTorrent protocol. The application, which is free to download and
does not require the user to return to the PTAS website at all afterwards -
operates as a Bit Torrent client but with the addition of media player software,
an index/catalogue of titles and images and descriptions of titles.

Once a work has been selected the application downloads the content using the
BitTorrent protocol, but the user may start watching it as soon as the process
starts,iewithout waiting for the completion of
the download.

Popcorn Time applications
locate torrents by searching catalogues of existing websites which host those
torrents. At times they do so by circumventing existing blocks [so the (evergreen) question may become: are blocks effective?].

As stressed by Birss J,
"[n]o-one really uses Popcorn Time in order to watch lawfully available
content."[para
24]

Yet an explanation was providedfor Popcorn Time

Jurisdiction under s97A CDPA

In order for a court to be
able to issue an order pursuant to s97A CDPA, there are four matters that need
to be established:

(1) that the ISPs are service providers;

(2) that the users and/or operators of the target websites
infringe copyright;

(3) that users and/or the operators of the target websites
use the services of the ISPs to do that; and (4) that the ISPs have actual
knowledge of this.

While (1) and (4) were not
really controversial in this case, Birss J focused his analysis on (2) and (3).
In relation to the latter the judge found that the Popcorn Time application was a means necessarily used for users to infringe the copyright of the
claimants in many senses. However whether (3) was also met in this case proved
more challenging to determine.

Did
the operators of the target websites infringe copyright? Yes, but not by
communicating works or authorising infringement

As
happened in previous applications for blocking orders, the applicants had put
their case in three ways: (1) communication to the public; (2) authorisation,
and (3) tortfeasance. While Birss J found infringement in respect of (3), he
held that the Popcorn Time system did not infringe copyright by means of (1) or
(2).

In this
Kat’s opinion, the part of the decision on (1) in particular is fairly
interesting.

Although
Birss J did not refer to recent decisions of the Court of Justice of the
European Union (CJEU) on the right of communication/making available to the
public, he appeared to dismiss implicitly the approach taken in Svensson[Katposts here] and its progeny, ieBestWater[here] and C More Entertainment[here and here].

While in
those cases the CJEU suggested that to have an act of communication/making
available to the public it is not necessary to transmit any work, at para 38 of
his decision, Birss J stated:

Only fully licensed popcorn for Benedict

“I cannot see how the operator of the PTAS
website commits an act of communicating copyright works to the public. The PTAS
site simply does not communicate any copyright works to anybody. There is no
transmission (or retransmission) of the copyright work at all.”

This bit
of Birss J’s decision is in line with what the European Copyright Society
suggested in its Opinion on Svensson[cf the very different approach taken
instead by ALAI, on which see - amongst others -here],
ie that to have an act of
communication it is necessary to transmit a work.

In conclusion

Birss J
found that the court had jurisdiction under s97A. Nonetheless, “[t]his case was … much more complicated that
it appeared to those seeking the s97A order. The fact that wholesale
infringements of copyright [were] clearly taking place using Popcorn Time [was]
true enough However, it [was] nevertheless necessary to identify with precision
the correct legal basis of the application.” In relation to the Popcorn Time system
this was tortfeasance in relation to (3), but not communication to the public
or authorisation, as had been instead the case in previous applications.

Tuesday, 28 April 2015

The IPKat welcomed the news from the meeting of the Administrative Council of the European Patent Office (EPO), following its meeting in March, that members of the Administrative Council and the President of the EPO were going to meet with the EPO unions (SUEPO and FFPE), with a view to establishing formal recognition and improving social dialogue. Merpel further called upon the parties to work together to achieve the three 'o's: optimism for the future, organisational fairness and transparency, and overall contentment for all who commit their careers and their endeavours to the EPO cause.

The meeting took place on 22 April, and was reported by the IPKat here.

SUEPO's report (see news here on 23 April) was cautious, pointing out that

union recognition means little if it is not accompanied by meaningful involvement in practical matters that affect staff, like the recent reforms on the Career & Performance, Sick leave & Incapacity, and the reforms that still remain to be designed in the framework of the HR roadmap.

What we all want!

Thinking about the EPO's controversial health reforms, something has struck Merpel. Employees of the European Patent Office are not the only inhabitants of international or regional IP offices to fall sick and have health issues, whether they live locally or are living abroad. People who work for the World Intellectual Property Organization (WIPO), the Office for Harmonisation in the Internal Market (OHIM) and the Community Plant Variety Office (CPVO), the Benelux Office for Intellectual Property (BOIP) and the good folk whose job it is in the European Commission to make life difficult for us by thinking up new IP policies, must all have the occasional health issue too, and presumably WIPO, OHIM, the CPVO, BOIP and the Commission must have schemes that govern the health and welfare of their own employees -- none of whom, so far as Merpel is aware, have publicly complained about the health provisions that apply to them.

While she is no expert on healthcare provisions this moggy thinks that, if much the same sort of highly educated, skilled employees suffer from much the same health issues irrespective of the institution for which they work, there is no obvious reason why they should be treated differently. She wonders: can some kind reader compile a comparative table of sickness-related provisions and benefits that apply for each of the organisations mentioned above, and any others she may have overlooked, so that she can publish it here and readers of this weblog can see for themselves whether the EPO staff have a genuine grievance or are merely in training for the Marathon Moan event at the next Olympics?

In the meantime, the protests in Munich continue, and SUEPO now plans a demonstration on Thursday 30 April 2015 in the form of a march from the PschorrHöfe complex to the Dutch consulate. As SUEPO puts it (see news here on 27 April):

Why the Dutch consulate? By imposing draconian restrictions on colleagues who are sick or invalid, the latest health reform offends staff fundamental rights such as freedom of movement and right to a private life. As a host country, the Netherlands has a special duty of care towards the 3,000 staff members residing in The Hague.

The Dutch delegation nevertheless voted in favour of these reforms. A Dutch court recently agreed with SUEPO’s claim that the strike regulations introduced by Mr Battistelli infringe fundamental rights. Mr Battistelli reacted with fury and was quick to announce that the judgment was “neither legally admissible nor practically enforceable”.
The (then) Dutch Minister of Justice, Mr Opstelten, backed the President and blocked the implementation of the judgment. Last week Mr Battistelli informed us that the Dutch government will join the EPO in its attempt to overturn the judgment in the next instance (“cassation”). If so then the Dutch government makes itself complicit in violating fundamental rights.With this demonstration, we wish to protest against the attitude of the EPO and the Dutch government and remind them of their duty of care towards staff in the EPO.

Merpel regrets that further actions are necessary, and hopes that genuine engagement by the EPO administration with the unions, accompanied by revisiting some of the reforms that have already been implemented prior to any possible union recognition, may make this the last.

A further point that strikes Merpel is that, while the EPO administration insists that substantial increases in examination productivity are necessary, it has been not explained, either apparently to the EPO employees, and certainly not to EPO users, what is the nature of this necessity. It is certainly not apparent from the published accounts of the EPO (which Merpel attempted to examine here).

In the meantime, the cartoon is a venerable tool of political protest, and Merpel was struck by SUEPO's latest offering.

As ever, Merpel welcomes comments, but begs to remind readers of the following:

Henceforth, in respect of all EPO-related blogposts, no comment will be posted if it is merely ascribed to "Anonymous". Any reader wishing to conceal his or her identity must adopt a pseudonym (which should not be obscene and should not be the name, or the mis-spelling of the name, of a real person). The pseudonym need not be an actual login name, as long as it is stated clearly at the beginning and/or end of the comment itself. This way, it will be easier for people who post later comments to identify and remember the earlier comment-poster and to recall the discussion string. Where, as has already happened on occasion, a string carries over from one blogpost to a later one on the same or a related subject, readers will be encouraged to use the same pseudonym for the sake of continuity.

"If it be true (as it certainly is) that a man can feel exquisite happiness in skinning a cat, then the religious philosopher can only draw one of two deductions. He must either deny the existence of God, as all atheists do; or he must deny the present union between God and man, as all Christians do. The new theologians seem to think it a highly rationalistic solution to deny the cat" (G. K. Chesterton, Orthodoxy, 1908).

G. K. Chesterton

A
couple of weeks ago the Spanish Supreme Court gave ajudgment which synthesised the
construction of the Berne Convention and the Spanish IP Law regarding the scope and duration of authors' rights in the
European Union. In doing so, it confirmed the decisions of the lower Courts of
Madrid and dismissed an appeal by Spanish publisher Valdemar
(Enokia S.L) which was found to have exploited without due
consent the works of the English theologian and philosophist G.
K. Chesterton(right),
who died in 1936. This was on the basis that 80 years of post-mortem protection under theSpanish IP Law of 1879 had not yet expired.

The
author's rights in Chesterton's works had been vested in a UK charity, the Royal Literary Fund, which was set up in 1790 to help British writer facing financial difficulties to publish their works. The Fund's action for copyright infringement, alleging the unlawful publishing and
commercialization of Chesterton's works, succeeded. Valdemar appealed to the Supreme Court, relying on two pleas.The
first plea relied on infringement of Articles 5(2) and 7(6) of the
Berne Convention. Said Valdemar, the Madrid Court of Appeal had confused the scope of
protection of authors' rights under Article 5 with the duration of
protection under Article 7. In doing so, said Valdemar, the Court misapplied
Article 5(2) by interpreting the right of the
Countries of the Union to extend the terms of protection beyond 50 years from the author's death [in this case, up
to 80 years from the author's death according to the Spanish IP Law
of 1879],
as provided by Article 7(6). While Article 5(2) recognises that authors are exempted from formalities if they wish to enjoy protection in the Countries of the Union, and that
such protection is independent of the protection granted in a work's country of origin, such exemption concerns the author's entitlement
to the rights, but not their duration. Valdemar maintained that the
exemption should have been applied to the 50 years term of protection since that was the term established by Article 7 of Berne while, in order for
Chesterton's works to be protected for 80 years, those rights should
have been registered, as the Spanish IP Law of 1879 required.
Otherwise, concluded Valdemar, more favourable treatment would be
accorded to European authors at the expense of Spanish authors, who would this suffer discrimination on the basis of nationality.In
its second plea in law, Valdemar asserted that the error mentioned in the first plea led to the failure of the Court of Appeal to apply the rules governing the public domain, enshrined in Article 38 and 39 of the Spanish IP Law of 1879, since Chesterton's works were not registered with the
Spanish Registry. Further, the Court had misapplied the fourth and fifth
transitory provisions of the Spanish IP Law of 1996, which was the law applicable at the time the dispute commenced, on the duration
of the authors' rights. The fourth transitory provision of the 1996 law reduced the term of protection accorded under the Law of 1879 in respect of the works of authors who died before 7 December 1987.
Valdemar's pleas were in vain.

As to the first plea in law, the Supreme Court stated
that, in compliance with the principle of National Treatment, expressed in Article
5(1) of the Berne Convention, Chesterton's works should be afforded the same
protection as was granted to Spanish authors: such protection must be free of registration restraints, irrespective
of whatever the Law of 1879 provided. That protection would be granted for the entire term applicable under the
relevant law to Spanish authors, namely 80 years after author's
death, according to the Spanish IP Law of 1879 in conjunction with
Article 7(6) of Berne., since duration of protection is regulated by the law of the country in which protection is claimed -- in this case Spain (Berne, first [art of Article 7(8).

Not prepared to|be skinned ...

The
Court observed that the second part of Article 7(8), which stated that 'the
term shall not exceed the term fixed in the country of origin of the
work' [in this case, the then-UK term of 50 years post mortem auctoris] could not applyin the
view of the principle of non discrimination contained in Article 118 of theTreaty on the Functioning of the European Union and its construction by the Court of Justice of the European Union in
bothPhil Collins C-92/92 and C-326/92 and La Bohème C-360/00. it followed from this that the rights in Chesterton's
works were entitled to protection during the entire period in protection available in Spain, making no distinction between the term stipulated in the Berne Convention and the extension contained in the Spanish IP
Law of 1879. This did not mean more favoured treatment for EU authors against native Spanish authors
who published under the 1879 law, or against those authors whose
works entered the public domain for lack of registration under Articles 38 and 39 of
the 1879 law.

There was no discrimination, bearing mind the fourth
and fifth transitory provision of the IP Code of 1996.
First, the 80-year term of protection was applicable to all
authors who died before 7 December 1987, irrespective of their
nationality. Secondly, under the application of the relevant law at the
time of the dispute (ie the 1996 IP Code), those works
which entered the public domain in compliance with the 1879 Law were to be considered as remaining protected since the new legislation
did not recognise constitutive effects to the registration of IP
rights [without prejudice of the rights acquired by
third parties under the previous IP laws, as the fifth transitory
provision recites].
In the end, Valdemar had to comply with the withdrawal of Chesterton's works from the market, the destruction of the works' printing blocks and the payment of compensation of 23,180.02 euros to the Royal Literary Fund.

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